CERTIFIED BISON Cannot Be Included in the Supplemental Register of Trademarks Because It Is a Generic Term

info@josefelgueroso.com

2021-05-25

The Trademark Trial and Appeal Board has affirmed an examiner's refusal to register CERTIFIED BISON in the Supplemental Register, because it is the generic term for the goods identified in the application.

Source: Jean Beaufort (publicdomainpictures.net)

The Supplemental Register

The United States has two trademark registers. The Principal Register contains distinctive marks. The Supplemental Register contains terms that are not sufficiently distinctive to qualify as trademarks, but may eventually become so.

The more distinctive a term is, the more protection it receives as a trademark. From most distinctive to least distinctive, terms can be classified as:

Fanciful: a made-up term that has no meaning; for example: EXXON.
Arbitrary: a term that has meaning, but is used in a different context; for example: APPLE for computers.
Suggestive: a term that alludes to the goods or services, but requires imagination to make the connection; for example: ROACH MOTEL for insect traps.
Descriptive: a term that describes a characteristic or ingredient of the product; for example: COCA-COLA for soft drinks.
Generic: a term that is the genus of the goods or services; for example: CHEESE for the product made from curdled milk.

Fanciful, arbitrary, and suggestive terms can be registered as trademarks in the Principal Register, because they are considered inherently distinctive.

On the other hand, descriptive terms cannot be registered as trademarks for the products they describe, unless they acquire secondary meaning. A descriptive term acquires secondary meaning when the relevant public associates the term with a single manufacturer or provider, instead of associating it with a category of products or services. For example, COCA-COLA was originally descriptive, because the term referred to two ingredients of the soft drink. But the term eventually acquired secondary meaning, because consumers over time associated the term with the soft drink from a specific manufacturer.

Until a descriptive term acquires secondary meaning, it can be included in the Supplemental Register. Once it acquires secondary meaning, it can be included as a trademark in the Principal Register.

Generic terms, however, cannot be included in the Principal Register or the Supplemental Register, because they are considered incapable of acquiring secondary meaning. For example, consumers are unlikely to eventually associate CHEESE with a specific manufacturer of the product made from curdled milk.

Facts

Golden Bison applied to register CERTIFIED BISON for certified bison meat in the Supplemental Register, disclaiming "bison." The trademark examiner concluded that the term was generic for the goods identified in the application, and refused its registration.

Golden Bison appealed to the Trademark Trial and Appeal Board, an administrative body that is part of the US Patent and Trademark Office.

The Board's Decision

The Trademark Office must refuse the registration of generic terms. A generic term is a common descriptive name for the class of goods or services, and it can refer to the genus, a subgenus, or a key aspect of the genus. The Trademark Office has the burden of proving genericness.

The test to determine whether a term is generic has two parts:

What is the genus for the product or service? The genus is defined based on the goods or services identified in the application.
Does the relevant public understand the term to be the genus of the goods or services? If the public understands the term to be the genus, a subgenus, or a key aspect of the goods or services, the term is generic. The relevant public is the consuming public of the goods or services.

Golden Bison's trademark application defined the goods as “bison meat; prepackaged meals consisting primarily of bison meat and vegetables, all of the aforementioned bison meat being certified.”

The examiner's evidence included a definition of "certified meat" from the US Department of Agriculture, two web pages that included "certified bison" with another term, and a dictionary definition of "certified" (genuine, authentic). The examiner also included web pages from Golden Bison's own site that described its quality assurances, standards, and food safety practices.

The relevant public consisted of restaurants and consumers of certified bison meat and prepackaged meals containing bison meat and vegetables.

Based on those definitions and the evidence provided by the examiner, the Board concluded that the relevant public understands "certified bison" to be a subgenus of bison meat. As a result, it affirmed the examiner's refusal to include CERTIFIED BISON in the Supplemental Register.

Similar Trademarks

Golden Bison raised the registered marks CERTIFIED ANGUS BEEF and CERTIFIED HEREFORD BEEF to support its application.

The Board noted that CERTIFIED ANGUS BEEF is different from Golden Bison's applied-for mark, because it is registered for marketing services, not beef. Regarding CERTIFIED HEREFORD BEEF (with "beef" disclaimed), the Board simply observed that it is not bound by the Trademark Office's decisions.

Golden Bison also raised a recent case in which the United States Supreme Court held that booking.com was not generic because surveys showed that consumers recognized booking.com as a brand name. The Board noted that only one booking.com exists, whereas various sources use "certified bison."

Jose Felgueroso
Abogado | Attorney